- PTAB · Nov 17, 2017 · IPR2017-00451 · APJ Eleni Mantis Mercader · IPR · Rehearing
The Board denied rehearing, concluding Petitioner showed no overlooked or misapprehended matter and did not establish that Engel’s protocol-specific hash tables linked packets by application activity as required.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Regardless of whether Petitioner’s arguments on rehearing were presented sufficiently in the Petition, we agree with Patent Owner as to the merits of those arguments, and are not persuaded that we misapprehended or overlooked any matters in rendering our Decision. In particular, Petitioner’s rehearing arguments conflate the terms “application” and “protocol.” See Opp. 9–15. Petitioner’s referencing of matching “IP addresses stored in each dialog record of the NFS dialog hash table” at best links a packet exchange between a server and a client using the NFS protocol, and not a packet exchange pertaining to specific application activity, as our interpretation of “conversational flows” requires. See Req. Reh’g 7 (quoting Ex. 1006 ¶ 89) (emphasis omitted). Other hash tables similarly would be populated with protocol-specific information (e.g., “FTP records in one table, . . . Telnet records in another table, TCP records in a further table”), but again, linking by protocol is not the same as linking by application. See Opp. 10–11. We find Patent Owner’s example of a single Skype application spawning multiple connections using different protocols, such as one audio protocol and one video protocol to be illustrative of the difference between Engle and the claimed invention. Id. at 12. In this scenario, and based on Petitioner’s arguments, Engel’s system would “put the audio protocol information in an appropriate hash table and the video information in a different table.” Id. Petitioner provides no explanation of how Engel would recognize these hash tables as being related to the same application (i.e., single Skype application). Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regardless of whether Petitioner’s arguments on rehearing were presented sufficiently in the Petition, we agree with Patent Owner as to the merits of those arguments, and are not persuaded that we misapprehended or overlooked any matters in rendering our Decision. In particular, Petitioner’s rehearing arguments conflate the terms “application” and “protocol.” See Opp. 9–15. Petitioner’s referencing of matching “IP addresses stored in each dialog record of the NFS dialog hash table” at best links a packet exchange between a server and a client using the NFS protocol, and not a packet exchange pertaining to specific application activity, as our interpretation of “conversational flows” requires. See Req. Reh’g 7 (quoting Ex. 1006 ¶ 89) (emphasis omitted). Other hash tables similarly would be populated with protocol-specific information (e.g., “FTP records in one table, . . . Telnet records in another table, TCP records in a further table”), but again, linking by protocol is not the same as linking by application. See Opp. 10–11. We find Patent Owner’s example of a single Skype application spawning multiple connections using different protocols, such as one audio protocol and one video protocol to be illustrative of the difference between Engle and the claimed invention. Id. at 12. In this scenario, and based on Petitioner’s arguments, Engel’s system would “put the audio protocol information in an appropriate hash table and the video information in a different table.” Id. Petitioner provides no explanation of how Engel would recognize these hash tables as being related to the same application (i.e., single Skype application). Id.” slip op. at 6
NonePatents in suitUS 6,839,751 - PTAB · Nov 17, 2017 · IPR2017-00450 · APJ Eleni Mantis Mercader · IPR · Rehearing
The Board denied rehearing, finding Engel’s protocol-specific hash tables did not show application-specific conversational flows as required by the claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“presented sufficiently in the Petition, we agree with Patent Owner as to the merits of those arguments, and are not persuaded that we misapprehended or overlooked any matters in rendering our Decision. In particular, Petitioner’s rehearing arguments conflate the terms “application” and “protocol.” See Opp. 9–15. Petitioner’s referencing of matching “IP addresses stored in each dialog record of the NFS dialog hash table” at best links a packet exchange between a server and a client using the NFS protocol, and not a packet exchange pertaining to specific application activity, as our interpretation of “conversational flows” requires. See Req. Reh’g 7 (quoting Ex. 1006 ¶ 89) (emphasis omitted). Other hash tables similarly would be populated with protocol-specific information (e.g., “FTP records in one table, . . . Telnet records in another table, TCP records in a further table”), but again, linking by protocol is not the same as linking by application. See Opp. 10–11. We find Patent Owner’s example of a single Skype application spawning multiple connections using different protocols, such as one audio protocol and one video protocol to be illustrative of the difference between Engle and the claimed invention. Id. at 12. In this scenario, and based on Petitioner’s arguments, Engel’s system would “put the audio protocol information in an appropriate hash table and the video information in a different table.” Id. Petitioner provides no explanation of how Engel would recognize these hash tables as being related to the same application (i.e., single Skype application). Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented sufficiently in the Petition, we agree with Patent Owner as to the merits of those arguments, and are not persuaded that we misapprehended or overlooked any matters in rendering our Decision. In particular, Petitioner’s rehearing arguments conflate the terms “application” and “protocol.” See Opp. 9–15. Petitioner’s referencing of matching “IP addresses stored in each dialog record of the NFS dialog hash table” at best links a packet exchange between a server and a client using the NFS protocol, and not a packet exchange pertaining to specific application activity, as our interpretation of “conversational flows” requires. See Req. Reh’g 7 (quoting Ex. 1006 ¶ 89) (emphasis omitted). Other hash tables similarly would be populated with protocol-specific information (e.g., “FTP records in one table, . . . Telnet records in another table, TCP records in a further table”), but again, linking by protocol is not the same as linking by application. See Opp. 10–11. We find Patent Owner’s example of a single Skype application spawning multiple connections using different protocols, such as one audio protocol and one video protocol to be illustrative of the difference between Engle and the claimed invention. Id. at 12. In this scenario, and based on Petitioner’s arguments, Engel’s system would “put the audio protocol information in an appropriate hash table and the video information in a different table.” Id. Petitioner provides no explanation of how Engel would recognize these hash tables as being related to the same application (i.e., single Skype application). Id.” slip op. at 6
NonePatents in suitUS 6,771,646 - PTAB · Nov 17, 2017 · IPR2017-00769 · APJ Eleni Mantis Mercader · IPR · Rehearing
The Board denied the rehearing requests, concluding Petitioner did not show the Board overlooked or misapprehended arguments or abused its discretion in denying institution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Regardless of whether Petitioner’s arguments on rehearing were presented sufficiently in the Petition, we agree with Patent Owner as to the merits of those arguments, and are not persuaded that we misapprehended or overlooked any matters in rendering our Decision. In particular, Petitioner’s rehearing arguments conflate the terms “application” and “protocol.” See Opp. 9–15. Petitioner’s referencing of matching “IP addresses stored in each dialog record of the NFS dialog hash table” at best links a packet exchange between a server and a client using the NFS protocol, and not a packet exchange pertaining to specific application activity, as our interpretation of “conversational flows” requires. See Req. Reh’g 7 (quoting Ex. 1006 ¶ 89) (emphasis omitted). Other hash tables similarly would be populated with protocol-specific information (e.g., “FTP records in one table, . . . Telnet records in another table, TCP records in a further table”), but again, linking by protocol is not the same as linking by application. See Opp. 10–11. We find Patent Owner’s example of a single Skype application spawning multiple connections using different protocols, such as one audio protocol and one video protocol to be illustrative of the difference between Engle and the claimed invention. Id. at 12. In this scenario, and based on Petitioner’s arguments, Engel’s system would “put the audio protocol information in an appropriate hash table and the video information in a different table.” Id. Petitioner provides no explanation of how Engel would recognize these hash tables as being related to the same application (i.e., single Skype application). Id.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented sufficiently in the Petition, we agree with Patent Owner as to the merits of those arguments, and are not persuaded that we misapprehended or overlooked any matters in rendering our Decision. In particular, Petitioner’s rehearing arguments conflate the terms “application” and “protocol.” See Opp. 9–15. Petitioner’s referencing of matching “IP addresses stored in each dialog record of the NFS dialog hash table” at best links a packet exchange between a server and a client using the NFS protocol, and not a packet exchange pertaining to specific application activity, as our interpretation of “conversational flows” requires. See Req. Reh’g 7 (quoting Ex. 1006 ¶ 89) (emphasis omitted). Other hash tables similarly would be populated with protocol-specific information (e.g., “FTP records in one table, . . . Telnet records in another table, TCP records in a further table”), but again, linking by protocol is not the same as linking by application. See Opp. 10–11. We find Patent Owner’s example of a single Skype application spawning multiple connections using different protocols, such as one audio protocol and one video protocol to be illustrative of the difference between Engle and the claimed invention. Id. at 12. In this scenario, and based on Petitioner’s arguments, Engel’s system would “put the audio protocol information in an appropriate hash table and the video information in a different table.” Id. Petitioner provides no explanation of how Engel would recognize these hash tables as being related to the same application (i.e., single Skype application). Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regardless of whether Petitioner’s arguments on rehearing were presented sufficiently in the Petition, we agree with Patent Owner as to the merits of those arguments, and are not persuaded that we misapprehended or overlooked any matters in rendering our Decision. In particular, Petitioner’s rehearing arguments conflate the terms “application” and “protocol.” See Opp. 9–15. Petitioner’s referencing of matching “IP addresses stored in each dialog record of the NFS dialog hash table” at best links a packet exchange between a server and a client using the NFS protocol, and not a packet exchange pertaining to specific application activity, as our interpretation of “conversational flows” requires. See Req. Reh’g 7 (quoting Ex. 1006 ¶ 89) (emphasis omitted). Other hash tables similarly would be populated with protocol-specific information (e.g., “FTP records in one table, . . . Telnet records in another table, TCP records in a further table”), but again, linking by protocol is not the same as linking by application. See Opp. 10–11. We find Patent Owner’s example of a single Skype application spawning multiple connections using different protocols, such as one audio protocol and one video protocol to be illustrative of the difference between Engle and the claimed invention. Id. at 12. In this scenario, and based on Petitioner’s arguments, Engel’s system would “put the audio protocol information in an appropriate hash table and the video information in a different table.” Id. Petitioner provides no explanation of how Engel would recognize these hash tables as being related to the same application (i.e., single Skype application). Id.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,651,099 - One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Institution deniedPTAB · Oct 3, 2017 · IPR2017-01042 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–22 unpatentable over Crusius alone or with Weik.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to the challenged claims. Therefore, we do not institute an inter partes review as to the challenged claims of the ’966 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“battery.” Claim 9 further recites “the at least one rechargeable battery being removably connectable to electrically powered equipment . . . to provide power to the electrically powered equipment.” Thus, the claim recites one connection between the battery charging station and the rechargeable battery (“in electrical communication”) and another connection between the rechargeable battery and the electrically powered equipment (“removably connectable to”). Separately reciting two different connections between the devices and the rechargeable battery indicates that the devices are distinct from each other. The other independent claims include similar language. Claim 1 recites “a battery charging station in electrical communication with at least one rechargeable battery” and “electrically powered equipment . . . comprising an apparatus for receiving the at least one rechargeable battery and to be powered by the at least one rechargeable battery to perform a predetermined function.” Claim 15 recites “detecting whether the at least one rechargeable battery is in electrical communication with a battery charging station” and “providing power from the at least one rechargeable battery to the electrically powered equipment in response to the at least one rechargeable battery being electrically connected to the electrically powered equipment.” Claim 19 recites “a battery charging station configured to supply power to the at least one separable rechargeable battery that is configured to separably and electrically connect to and power electrically powered equipment.” The Specification of the ’966 patent confirms that the “electrically powered equipment” is distinct from the “battery charging station.” Figure 3 of the ’966 patent shows that battery charging station 82 includes batteries 104, 108 in respective receptacles 102, 106. Ex. 1001, Fig. 3. The ’966 patent never states that battery charging station 82 may include electrically powered equipment. Id. at 4:47–5:15. To the contrary, the ’966 patent shows electrically powered equipment 140 with battery 144 in receptacle 142 in Figure 5. Id. The ’966 patent does not state that electrically powered equipment 140 constitutes any part of battery charging station 82, but rather discloses that battery 144, which may be one of the batteries 102, 104 from battery charging station 82 in Figure 3, may be used in electrically powered equipment 140, and when finished, may be placed back in battery charging station 82 to be recharged. Id. at 5:51–6:3.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Petitioner maps the claimed “battery charging station” to Crusius’s battery charge and control circuit 41 and conductors 46, 49. Pet. 26; Ex. 1012, Fig. 1 (annotated). Petitioner maps the claimed “electrically powered equipment” to Crusius’s LEDs 91–93, buzzer 95, and “associated circuitry.” Pet. 31–32. Petitioner does not identify any particular part(s) of Crusius as the “associated circuitry,” however. As shown and described in Crusius, and as Petitioner acknowledges, LEDs 91–93 and buzzer 95 are part of battery charge and control circuit 41. Ex. 1012 ¶ 14, Fig. 1; see Pet. 31 (arguing that Crusius “discloses electrically powered equipment other than and physically separate or separable from the BMO including LEDs 91–93, as well as buzzer 95 in the battery charge and control unit 41” (emphasis added)). Thus, in the language of the claims, Petitioner contends Crusius describes “electrically powered equipment” (Crusius’s LEDs 91–93, buzzer 95, and “associated circuitry”) that is part of a “battery charging station” (Crusius’s battery charge and control circuit 41). However, for the reasons explained above, the claims do not encompass this arrangement, but require a “battery charging station” and “electrically powered equipment” that are distinct devices. See supra Section I.E. Thus, Petitioner’s arguments as to how Crusius discloses a “battery charging station” and “electrically powered equipment” as recited in claim 1 are not persuasive. Petitioner has not shown a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner asserts one of ordinary skill in the art would have been “motivated to modify Crusius to include using two of the [barrier movement operators] disclosed in the Crusius reference in a single garage (for example, equipping a two-door garage with a second garage door opener according to Crusius).” Pet. 58–59; Ex. 1003 ¶¶ 219, 200. Petitioner notes multiple garage doors, such as disclosed by another reference, the Craftsman Owner’s Manual for Garage Door Operator Model 139.53919 (Ex. 1007, “Craftsman”), were common at the time of the ’966 patent. Id. According to Petitioner, for example, “with two Crusius garage door openers, the same remotes could be used to control multiple garage door openers, and the battery backup unit . . . could be interchanged between garage door openers in the event of a power outage.” Id. Petitioner’s reasons to modify Crusius and its declarant’s testimony regarding the same are unpersuasive. As Patent Owner asserts, the testimony of Petitioner’s declarant, Stuart Lipoff, concerning the reasons to modify Crusius is conclusory and lacks evidentiary support. Prelim. Resp. 25. Specifically, Mr. Lipoff states “during a power outage in a garage with two garage doors, a battery backup unit could be used to operate the first garage door, i.e., to gain entry in the garage from outside, then plugged into a second barrier movement operator to operate the second door, for example, if departing in a different vehicle.” Ex. 1003 ¶ 225. This testimony as to what someone “could” have done does not address, for example, why a person of ordinary skill would undertake the more difficult task of moving a backup battery from one barrier movement operator to another as opposed to simpler approaches, such as providing each barrier movement operator with its own backup battery or using a single backup battery connected to operate multiple barrier movement operators. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” (emphases omitted)). Thus, we find Petitioner’s reasons to modify Crusius and its declarant’s testimony unpersuasive. Accordingly, Petitioner fails to establish a reasonable likelihood that any of the claims challenged are unpatentable over Crusius.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,635,966 - Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Sep 11, 2017 · IPR2017-00935 · APJ Justin T Arbes · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting inter partes review of claims 1, 4, 8–11, 13, 17–24, 26–28, 43, 46, 49, 50, and 52–62 of U.S. Patent No. 8,354,726 B2 (Ex. 1001, “the ’726 patent”) pursuant to 35 U.S.C. § 311(a). Patent Owner Godo Kaisha IP Bridge 1 filed a Preliminary Response (Paper 8, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“limitation of claim 1. Petitioner does not point to any express disclosure in the Intel 90 nm Report of the relevant distance and thicknesses, instead relying on averages of various measurements made by Dr. Fair. See Pet. 39–40; Ex. 1003 ¶¶ 93–99. Petitioner and Dr. Fair, however, do not explain any basis for why it is appropriate to rely on averages of measurements of different components at different locations—as opposed to actual measurements of each component asserted to be the “first gate electrode,” “auxiliary pattern,” “first side-wall insulating film,” “second side-wall insulating film,” and “stress-containing insulating film” recited in the claim—for purposes of calculating the distance limitation. For example, Petitioner does not contend that a person of ordinary skill in the art would have calculated averages and understood the reference to disclose certain values based on such a methodology. “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference,” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989), and that the claim limitations be “arranged or combined in the same way as recited in the claim[],” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Petitioner’s reliance on averages of various measurements, without any supporting explanation, is insufficient to show that the Intel 90 nm Report discloses the distance limitation of claim 1.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“D. Other Asserted Grounds (Claims 20, 22, 54, and 56) Petitioner contends that claims 20 and 54 are unpatentable over the Intel 90 nm Report and the Intel IEEE Paper, claims 22 and 56 are unpatentable over the Intel 90 nm Report and Doris, and claims 22 and 56 are unpatentable over the Intel 65 nm Report and Doris, under 35 U.S.C. § 103(a). Pet. 77–83. Claims 20 and 22 depend from claim 1, and claims 54 and 56 depend from claim 43. Petitioner does not argue that the distance limitation of claims 1 and 43 is taught by the Intel IEEE Paper or Doris, alone or in combination with the Intel reports. Id. We are not persuaded that Petitioner has established a reasonable likelihood of prevailing on its asserted grounds for the reasons explained above with respect to parent claims 1 and 43. See supra Sections II.B, II.C.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“E. Claim Interpretation The Board interprets claims using the “broadest reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard as the claim interpretation standard to be applied in inter partes reviews). The parties do not provide proposed interpretations for any claim terms, but Petitioner refers to a district court decision interpreting certain terms. See Pet. 11 (citing Ex. 1008). For purposes of this Decision, we conclude that no claim terms require interpretation.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,354,726 - Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Sep 5, 2017 · IPR2017-00903 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim obvious over the asserted Cheung- or Chiang-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is denied.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for petitioner
“Independent claims 18 and 35 both recite an “interlayer insulating film.” In Cases IPR2016-01331 and IPR2016-01367, we6 construed “interlayer insulating film” to mean “an insulating film located between but not within other layers.” See, e.g., Ex. 1010 (IPR2016-01331, Paper 9), 8. Petitioner applies that construction here, with which Patent Owner agrees. Pet. 33; Prelim. Resp. 10. 6 The instant panel is the same as that in Cases IPR2016-01331 and IPR2016-01367. No other express constructions are necessary for purposes of this” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(i.e., “an insulating film located between but not within other layers”). Petitioner does not identify any express disclosure in Cheung that purportedly meets this limitation. Instead, to meet this limitation, Petitioner asserts the following: A [person of ordinary skill in the art (“POSITA”)] would understand from the disclosure [in Cheung] of a “multilayer interconnect structure” that each layer of interconnects must be separated by an insulating film to ensure interconnects between different layers do not short with one another and to reduce parasitic capacitance between interconnect layers. Ex. 1003, ¶ 48. Although Fig. 2D depicts wires 14 directly on “integrated circuit structure 10,” a POSITA would understand that “integrated circuit structure 10” includes an insulating film (not shown) between the layer of wires 12 and the components of integrated circuit structure 10—i.e., transistor components and lower level interconnects that are in contact with the semiconductor substrate. Ex. 1003, ¶ 62. Pet. 34. We are not persuaded by this argument. First, Cheung neither mentions nor illustrates such an insulating film. Second, even assuming Petitioner is correct that some form of insulation is necessary between copper interconnects 12 and integrated circuit structure 10 in Cheung Figure 2D, it does not follow (as Petitioner implies) that such insulation necessarily would be in the form of an interlayer insulating film. As Patent Owner points out, it could alternatively be in the form of a buried insulating film.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Section V.B. of the Petition begins with arguments that a person of ordinary skill in the art would have combined the asserted references generally, without explaining what teachings within those references would be combined. Pet. 28 (“A POSITA would be motivated to combine Cheung with Chiang and/or Shinoda because each reference focuses on a portion of integrated circuit manufacturing related to fabrication of interconnects, bonding pads, and a moisture-blocking passivating layer, which protects the integrated circuit from the surrounding environment.”), id. (“Chiang, Cheung, and Shinoda all relate to BEOL[7] and a person of ordinary skill would be motivated to combine them.”), id. at 29 (“A POSITA would be motivated to combine Cheung and Chiang as designing and manufacturing a semiconductor device requires knowledge of both bonding pads for external connection and the various lower layers that comprise a semiconductor device.”). These initial and general arguments are insufficient, as they fail to 7 “The portion of integrated circuit fabrication regarding interconnects, bonding pads, and passivation layers (as opposed to the fabrication of transistors) is called Back-End-of-Line (‘BEOL’).” Pet. 28. identify specific teachings from the asserted references that allegedly would have been combined and what the result of that combination would be.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · Graham - PTAB · Aug 16, 2017 · IPR2017-00931 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution of review of claims 18, 19, 30-36, and 47-51 because the same art and substantially the same arguments were previously presented.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“under any circumstances); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”). In determining whether to institute an inter partes review, we “may take into account whether, and reject the petition . . . because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The instant Petition presents the same art, Ting and Jeng, that was previously presented to the Office in a prior petition to institute an inter partes review of the ’980 patent. Compare Pet. 20, with IPR2016-01331, Paper 2, 19. For that reason alone, we “reject” the Petition pursuant to 35 U.S.C. § 325(d). Further, the instant Petition presents substantially the same arguments as those presented in the prior petition. In that regard, the instant Petition includes the same two grounds of unpatentability: (1) Ting anticipates claims 18, 19, 30–36, and 47–51; and (2) Ting and Jeng render obvious claims 18, 19, 30–36, and 47–51. Compare Pet. 27–67, with IPR2016- 01331, Paper 2, 20–64. Although Petitioner now relies on a different feature of Ting to meet the “interlayer insulating film” limitation than it did previously (see Pet. 1–2), its arguments nonetheless are substantially the same as those it previously presented. For this additional reason, we “reject” the instant Petition pursuant to 35 U.S.C. § 325(d).” slip op. at 6
Discretionary denial - PTAB · Jul 26, 2017 · IPR2017-00630 · APJ William M Fink · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Engel under 35 U.S.C. § 102(e), citing the testimony of Bill Lin, Ph.D., as support. Pet. 11–48 (citing Ex. 1006). We are not persuaded that Petitioner has established a reasonable likelihood of prevailing on its asserted ground for the reasons explained below.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Some prior art packet monitors classify packets into connection flows. The term “connection flow” is commonly used to describe all the packets involved with a single connection. A conversational flow, on the other hand, is the sequence of packets that are exchanged in any direction as a result of an activity—for instance, the running of an application on a server as requested by a client. It is desirable to be able to identify and classify conversational flows rather than only connection flows. The reason for this is that some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and server.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“supports Petitioner’s position. Monitoring statistics is not the same as monitoring a conversational flow, which necessarily identifies a “sequence of packets,” under our interpretation. See supra Section I.E. In other words, tracking statistics for a given application between a particular client and server, or between a particular server and all of its clients, is not sufficient in and of itself; a conversational flow identifies a sequence of packets exchanged between two nodes as a result of specific activity (e.g., a “sequence of packets that are exchanged in any direction as a result of an activity”).” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“12, 45, 47, and 48 are unpatentable over Engel and Baker, under 35 U.S.C. § 103(a). Pet. 57–73. Claim 12 depends from claim 1. Claim 44 recites an identical “conversational flow” limitation to that discussed above with respect to claim 1: (c) looking up a flow-entry database comprising none or more flow-entries for previously encountered conversational flows, the looking up using at least some of the selected packet portions and determining if the packet is of an existing flow. Petitioner relies on the same analysis for “Element 44(c)” as discussed above in Section II.A.2. Pet. 52 (“See Element 1(c).”). Accordingly, for the reasons set forth above, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on its asserted ground for the reasons explained above with respect to claim 44, as well as claims 12, 45, 47, and 48, which depend from claims 1 or 44. See supra Section II.A.2.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,954,789 - Facebook, Inc. / Instagram LLC v. Skky, LLCInstitution deniedPTAB · Jul 26, 2017 · IPR2017-00689 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of inter partes review of claims 1–11 under § 325(d), finding substantially the same prior art and arguments had been presented in an earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In other words, 35 U.S.C. § 325(d) provides authority to deny a petition on the basis that the same or substantially the same prior art or arguments were presented previously to the Office, but does not require that result. Based on the parties’ arguments and the particular facts of this proceeding, we conclude that it is appropriate to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). Petitioner relies on substantially the same prior art in the present Petition and the -88 Petition. Prelim. Resp. 35–36. Four of the asserted prior art references, namely Rolf, Gatherer, Forta, and Hacker, are the same in both proceedings. Compare -88 Pet. 3, with Pet. 3–4. Petitioner also presents substantially the same arguments in the present Petition and the -88 Petition. Prelim. Resp. 35–36. Petitioner’s discussion of Rolf, Gatherer, Forta, and Hacker, the vast majority of Petitioner’s analysis of claims 1–11,” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In other words, 35 U.S.C. § 325(d) provides authority to deny a petition on the basis that the same or substantially the same prior art or arguments were presented previously to the Office, but does not require that result. Based on the parties’ arguments and the particular facts of this proceeding, we conclude that it is appropriate to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d).” slip op. at 5
Discretionary denialPatents in suitUS 9,124,718 - PTAB · Jul 26, 2017 · IPR2017-00769 · APJ Eleni Mantis Mercader · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted obviousness combinations rendered the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“U.S. Patent No. 6,651,099 B1 (Ex. 1003, “the ’099 patent”). Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). By statute, institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In the first place, we observe that both parties agree that “conversational flow” is defined as “the sequence of packets that are exchanged in any direction as a result of an activity” and that “conversational flow” is distinguished from the prior art “connection flow” in that some conversational flows “involve more than one connection, and some even involve more than one exchange of packets between a client and server.” Furthermore, we observe that the specification of the ’099 patent explicitly supports this construction. See Ex. 1003, 2:34–45. Accordingly, for purposes of this Decision, we agree that Patent Owner’s proposed construction, which mirrors the definition in the specification, is the broadest reasonable construction consistent with the specification. Therefore, we interpret “conversational flow” to mean the sequence of packets that are exchanged in any direction as a result of an activity (for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and server.1” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“B engage in a dialog at each layer (e.g., the application layer). Thus, Engel monitors communications exchanged between the nodes at a particular layer, and tracks statistics for all communications at that layer (to assist in diagnosing network problems and improving network performance). See, e.g., id. at 4:24–32 (Engel “organizes and presents network performance statistics in terms of dialogs which are occurring at any desired level of the communication”). Petitioner, however, does not point to any disclosure in Engel indicating that its disclosed system relates information from one packet to another as pertaining to a specific application activity. In other words, in Engel there is exchange of packets in the application layer constituting a dialog (see, e.g., id. at 9:39–43) and collection of respective statistics for that dialog (see, e.g., id. at 4:24–32). However, even if application activity causes the dialog to be created, Petitioner does not direct us to teachings or disclosure of identifying a sequence of packets as being part of a specific application activity. Moreover, Patent Owner notes that in Engel “[k]eeping statistics for protocol layers may be temporarily suspended when parsing and statistics gathering is not rapid enough to match the rate of packets to be parsed,” which further suggests Engel does not relate sequences of packets to applications because some packets may be lost. Prelim. Resp. 36 (quoting Ex. 1007, 3:12–14; Ex. 2001 ¶ 74).” slip op. at 20
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 6,651,099
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.